[gnso-rpm-wg] TMCH review objectives
Paul Keating
Paul at law.es
Fri Sep 23 17:19:31 UTC 2016
Sorry I do not agree with the conclusion.
From: Phil Corwin <psc at vlaw-dc.com>
Date: Friday, September 23, 2016 at 7:11 PM
To: Paul Keating <paul at law.es>, Rebecca Tushnet <rlt26 at law.georgetown.edu>,
"Silver, Bradley" <Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
<gnso-rpm-wg at icann.org>
Subject: RE: [gnso-rpm-wg] TMCH review objectives
> As I said, Paul, what is ³unreasonably high² is a subjective call.
>
> But one thing this WG can definitely inquire into is whether certain ROs have
> obtained TMCH listings via various means for the express purpose of linking
> high prices to TMCH registered terms. If we find that to have gone on then it
> might well have deterred some TM owners from even registering in the TMCH.
>
>
>
>
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
> 202-255-6172/Cell
>
> Twitter: @VlawDC
>
> "Luck is the residue of design" -- Branch Rickey
>
>
> From: Paul Keating [mailto:Paul at law.es]
> Sent: Friday, September 23, 2016 12:48 PM
> To: Phil Corwin; Rebecca Tushnet; Silver, Bradley; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>
>
> Phil,
>
>
>
> There is no such thing as an ³unreasonably high premium price². The premium
> price is a combination of the price of the domain, plus the value of the
> exclusive option to purchase.
>
>
>
> If offered in 1977-78, FORD.com could have a premium price of $1M. The
> obvious ³trademark holder² would be Ford Motor Co. However, the domain could
> be more valuable to Gerald Ford who was running for president or the Ford
> Foundation which has 12.5 BILLION under management endowment.
>
>
>
> Again, lets focus the subject properly.
>
>
>
> TMCH = preemptive rights / Prior restraint (absolute restriction, no use
> context or no bad faith required)
>
>
>
> UDRP/URS Curative rights (use specific e.g. Some sort of bad faith)
>
>
>
>
>
> PRK
>
> From: Phil Corwin <psc at vlaw-dc.com>
> Date: Friday, September 23, 2016 at 6:14 PM
> To: Paul Keating <paul at law.es>, Rebecca Tushnet <rlt26 at law.georgetown.edu>,
> "Silver, Bradley" <Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
> <gnso-rpm-wg at icann.org>
> Subject: RE: [gnso-rpm-wg] TMCH review objectives
>
>
>>
>> I agree Paul, and that is why I said in a prior email that there can¹t be a
>> general rule and each instance requires its own analysis.
>>
>> Unreasonably high premium pricing (and I realize that¹s a subjective call) of
>> a TMCH-registered term is not equivalent to infringing. However, it may lead
>> to additional infringement if it deters a rights holder from making the
>> sunrise registration and the domain is subsequently acquired in general
>> availability and used for infringement (recognizing here that a wide variety
>> of dictionary words have inherent DNS value and can be used in legitimate
>> non-infringing ways).
>>
>> TM owners have legal rights as well as a right to expect some level of
>> reasonable effectiveness (not perfection) from the available RPMs. Registry
>> operators have a right to set their own prices, but that doesn¹t render them
>> immune from criticism and perhaps corrective action if they abuse it. Ad
>> domain registrants have a right to register and use domain names (including
>> at least all dictionary words registered in the TMCH)so long as they don¹t
>> engage in unlawful practices, including TM infringement.
>>
>> Our WG¹s job is to review the effectiveness of RPMs within this broad context
>> of all the affected parties and their separate and overlapping rights.
>>
>> Best, Philip
>>
>>
>> Philip S. Corwin, Founding Principal
>> Virtualaw LLC
>> 1155 F Street, NW
>> Suite 1050
>> Washington, DC 20004
>> 202-559-8597/Direct
>> 202-559-8750/Fax
>> 202-255-6172/Cell
>>
>> Twitter: @VlawDC
>>
>> "Luck is the residue of design" -- Branch Rickey
>>
>>
>> From: Paul Keating [mailto:Paul at law.es]
>> Sent: Friday, September 23, 2016 12:04 PM
>> To: Phil Corwin; Rebecca Tushnet; Silver, Bradley; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>>
>>
>> Phil,
>>
>>
>>
>> In furtherance to my last email responding to Mr. Levy, even an unreasonably
>> priced domain is not infringing. It is important that we not mix up the
>> concepts at issue. We are discussing both ³preventative rights: and
>> ³curative rights². The preventative rights mechanism should be severely
>> limited because it acts as a restraint of market tendencies in the absence of
>> actual infringement. Imposing preventative measures is akin to imposing a
>> ³prior restraint² which (certainly in the area of speech) is disfavored as a
>> matter of public policy. The curative rights mechanism is the 2nd tool which
>> permits rights holders to rectify an infringement that has actually occurred.
>>
>>
>>
>> Rights holders already have the ability to pursue legal claims against a
>> registry who is intentionally targeting them by restricting access to domains
>> other than by way of exorbitant pricing. The hurdles that the rights holders
>> must overcome to succeed on such claims are understandably high just as
>> they are with any other claimant faced with a similar situation in a
>> non-domain-related situation. However, such is life. It is not our place to
>> alter the legal environment and create contractually-based claims that do not
>> already exist in the law.
>>
>>
>>
>> I believe this was the import of the comment made during the last call asking
>> to differentiate economic costs from ³rights².
>>
>>
>>
>> Sincerely,
>>
>> Paul Raynor Keating, Esq.
>>
>> Law.es <http://law.es/>
>>
>> Tel. +34 93 368 0247 (Spain)
>>
>> Tel. +44.7531.400.177 (UK)
>> Tel. +1.415.937.0846 (US)
>>
>> Fax. (Europe) +34 93 396 0810
>>
>> Fax. (US)(415) 358.4450
>>
>> Skype: Prk-Spain
>>
>> email: Paul at law.es <mailto:Paul at law.es>
>>
>>
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>>
>>
>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin
>> <psc at vlaw-dc.com>
>> Date: Friday, September 23, 2016 at 5:39 PM
>> To: Rebecca Tushnet <rlt26 at law.georgetown.edu>, "Silver, Bradley"
>> <Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
>> <gnso-rpm-wg at icann.org>
>> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>>
>>
>>>
>>> I believe I just addressed that question in the email I posted if
>>> unreasonably high sunrise pricing deters a rights holder from registering a
>>> domain corresponding to a verified TM registered in the TMCH then it may be
>>> registered in the general availability period by an infringer, which in turn
>>> imposes a variety of costs on the TM owner (including those of bringing a
>>> subsequent URS, UDRP, or judicial action) and also creates the possibility
>>> of confusion and harm for the general public.
>>>
>>> This is not to say that all Premium pricing is unreasonable, as it is
>>> generally recognized that certain words and terms have inherent additional
>>> value in the DNS context it really requires a case by case analysis.
>>>
>>>
>>> Philip S. Corwin, Founding Principal
>>> Virtualaw LLC
>>> 1155 F Street, NW
>>> Suite 1050
>>> Washington, DC 20004
>>> 202-559-8597/Direct
>>> 202-559-8750/Fax
>>> 202-255-6172/Cell
>>>
>>> Twitter: @VlawDC
>>>
>>> "Luck is the residue of design" -- Branch Rickey
>>>
>>>
>>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>>> Behalf Of Rebecca Tushnet
>>> Sent: Friday, September 23, 2016 11:10 AM
>>> To: Silver, Bradley; gnso-rpm-wg at icann.org
>>> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>>>
>>> TMCH¹s goal of ³protection² against what, though? How does high pricing
>>> contribute to trademark infringement? High pricing may deter purchases of
>>> domain names, no doubt, but with what result for the system overall?
>>>
>>>
>>> Rebecca Tushnet
>>> Georgetown Law
>>> 703 593 6759
>>>
>>>
>>> From: Silver, Bradley [mailto:Bradley.Silver at timewarner.com]
>>> Sent: Friday, September 23, 2016 11:00 AM
>>> To: Rebecca Tushnet; gnso-rpm-wg at icann.org
>>> Subject: RE: TMCH review objectives
>>>
>>> I would add that the question of pricing feeds into the concept of
>>> effectiveness, because if the TMCH is serving as a database for registries
>>> to target brand owners for higher pricing based on the value of their
>>> brands, then this is antithetical to the TMCH¹s primary goal to provide
>>> protection for verified right holders.
>>>
>>>
>>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>>> Behalf Of Rebecca Tushnet
>>> Sent: Friday, September 23, 2016 10:26 AM
>>> To: gnso-rpm-wg at icann.org
>>> Subject: [gnso-rpm-wg] TMCH review objectives
>>>
>>> Hello, all. On the last WG call, concerns about pricing of domain names
>>> during the Sunrise Period arose. This led to a question of whether pricing
>>> is within the remit of this WG and the broader question of what the
>>> purpose of our TMCH review is. There seemed to be a desire to focus on the
>>> TMCH¹s effectiveness. The predicate question, then, is: effectiveness at
>>> what? Here are some suggestions for discussion: (1) minimizing the cost of
>>> operating the system for all concerned; (2) minimizing the number of actions
>>> that ultimately need to be brought against infringing registrants; (3)
>>> minimizing the number of noninfringing registrants whose legitimate uses are
>>> blocked or deterred. If the system is reasonably balancing those
>>> objectives, I suggest, then it is effective; potential changes should be
>>> directly related to improving performance on one or more of these metrics
>>> without unduly hampering the others.
>>>
>>> Yours,
>>> Rebecca Tushnet
>>>
>>>
>>> Rebecca Tushnet
>>> Georgetown Law
>>> 703 593 6759
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